By Andy McCue, 15 March 2005 13:30
NEWS Apple has won a legal dispute to force a UK firm it accused of cybersquatting to hand over the domain ownership for the iTunes.co.uk web address.
Apple issued proceedings against CyberBritain in December last year through the UK domain registration authority Nominet, claiming ownership of the domain should be transferred to Apple because it holds the iTunes trademark.
CyberBritain CEO and former dot-com teenage millionaire Benjamin Cohen accused Apple of bullying tactics and said he had registered the iTunes.co.uk domain a month before Apple's trademark application was published back in December 2000 and some three years before its online music download service launched.
Cohen maintains his motives for registering the domain were innocent and that he turned down a cash offer from Apple for the domain as it could have been interpreted as intent to profit from Apple's trademark.
But the Nominet dispute resolution service has found in favour of Apple and ordered CyberBritain to hand over iTunes.co.uk.
Cohen said he is currently considering his next move, which may be an appeal either directly to Nominet or to the High Court. Until the appeal Cohen maintains he will continue to use iTunes.co.uk as a redirect to his own company's shopping website.
Comments
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1. Alleged Cybersquatter
nominet seem to favour the big corporates, although they are contracted to act on behalf of the UK Internet Community and operate in their best interests, something they have never done. Look at the recent game.co.uk farce.
The sooner the UK internet community vote to have the .uk market opened up to competition the better. In the meantime Nominet should not be allowed to make these decisions and this type of claim should be arbitrated by the WIPO.
The claim has no merit, and the owner of the domain did not act in bad faith.. nor was ownership of the domain liable to cause trademark dilution, the fact is that the domain was registered prior to any trademark filing you could argue that this constitutes apple being in violation of trademark common law of the previous owner.
Apple are guilty of reverse-cybersquatting and domain hijacking.
Just because a company has more power and more money does not give them exclusive rights to any name, Apple can not establish a prima facie case for dilution of a trademark or common law trademark that did not exist prior to the trademark registration.
The domain name industry is still based on a first come first serve basis, and clearly the previous owner got there first.
Simply another case of Nominet really not having a clue, the outcome should of been that of Katie.com
2. David Howe
When you file for a mark, the filing is published for opposition, meaning that parties that have marks that they feel will be afffected by the issuance of a mark have the opportunity to oppose the issuance of the mark. Nowhere does this squatter say that he attempted to oppose the mark. Ignorance of the registration is not an excuse. This type of law is quite clear and has many years of precedence. Anyone versed in marks will tell you this is the case. Simply a case of wanting to extort money and not having things go his way so now he's attempting to cloud the issue.
3. James Liddell
Here, I am not at all certain about trademark registration but I strongly suspect that Apple, again, does not have a legal ground to stand on because of a parallelism in American law stating that trademark's sister, copyright, is effectively achieved simply by publically announcing one.
In other words, although a copy "right" becomes more fully known to the world through the formal process, it remains--again, under American law--that simply taking ANY action that has a public nature, no matter how slight, to establish a copyright is just as effective and secure as the formal process can generate should a court wrangle erupt.
That "slight... with a public nature" action can be nothing more than attaching a statement to a written document reading: "Copyright, 2005, Joseph F. Schmo". That statement is as good as any formal copyright filing by the most "prestious" law firm in the world.
I do not see "trademark" operating any differently from "copyright" in these regards, you see.
It seems as I read the news report that Apple is attempting to act as if a two-part process to register their property rights is required and that the process was interrupted by premature disclosure. If that is their thinking, then I believe that it is wrong. It is my position that their first act actually constituted the entire process as far as the law is concerned. They already had their right at the time of the premature disclosure, and it achieved with a "public nature" and there was no theft because they, themselves, had already taken a public action.
I believe that Apple has suffered no injury or loss in the affairs leading to this lawsuit.
Somehow, I gain the impression that in this tangle of law, code and evidence, Apple's lawyers gained access to the court calendar of a friendly judge and got thereby a friendly ruling, but that they either really don't know the laws they are trying to stand on--or else, they are doing the best they can in a case they privately know aforehand that they cannot win.
There is one other possibility as I see it and that involves their possibly seeking to blaze a path to the creation of a new precedent. But, I really don't see the grounds for their having any legal strategy here to attempt to create new law through precedent. Instead, I think they are just hacking at the undergrowth in hopes the other side makes a mistake or that the gods will smile down on them and somehow let them win in the end.
Higher courts will decide against Apple. You can bank on it, as I told some others in an earlier version of this story in these very informative newsletters.
In either case, Apple's lawyers will get paid for their time and effort and in the final resort that is what most lawyers are interested in and the law "be d*mned" in all other regards.
All this is eventually going to be embarrassing to the Apple executives who initiated this lawsuit. Some careers could suffer.
Very obviously, I don't like modern lawyers very much as all. I subscribe to Shakespeare's attitude toward them in one of his "history" plays.
4. anonymous
outrageous....
5. Alleged Cybersquatter
After reading the nominet panel decision paperwork, I now believe that the owner of the domain, made some really stupid decisions, trying to sell the domain on to the likes of napster. Cant believe napster released the emails to Apple..
However I still think apple are in the wrong.
But the case is a little more clearer now.